Louisville Ladder, Inc.

Patent Trials and Appeals Board

Aug 24, 2020

IPR2019-00336 (P.T.A.B. Aug. 24, 2020)

Trials@uspto.gov Paper 34
571-272-7822 Date: August 24, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WERNER CO.,
Petitioner,

v.

LOUISVILLE LADDER, INC.,
Patent Owner.
____________

IPR2019-00336
Patent 7,000,731 B2
____________

Before WILLIAM V. SAINDON, JOHN P. PINKERTON, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

MARSCHALL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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INTRODUCTION
Werner Co. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
institution of an inter partes review of claims 8–16, 19, and 20 of U.S.
Patent No. 7,000,731 B2 (Ex. 1001, “the ’731 patent”). Louisville Ladder,
Inc., (“Patent Owner”) filed a Preliminary Response. Paper 7. Pursuant to
35 U.S.C. § 314, we instituted an inter partes review of claims 8–16, 19, and
20 of the ’731 patent on all presented challenges. Paper 10. After
institution, Patent Owner filed a Response (Paper 12, “PO Resp.”), to which
Petitioner filed a Reply (Paper 19, “Pet. Reply”), and Patent Owner filed a
Sur-reply (Paper 22, “PO Sur-reply”). An oral hearing in this proceeding
was held on May 28, 2020, and a transcript of the hearing is included in the
record (Paper 33, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 8–16, 19, and 20 of the ’731
patent are unpatentable.
BACKGROUND
A. Real Parties in Interest
Petitioner states that it is the sole real party in interest for Petitioner.
Pet. 2. Patent Owner states that it is the sole real party in interest for Patent
Owner. Paper 4, 2.
B. Related Matters
The parties identify the following proceeding that may affect, or could
be affected by, a decision in this proceeding: Werner Co. v. Louisville
Ladder, Inc., No. 3-18-cv-00794-DJH (W.D. Ky.). Pet. 2; Paper 4, 2.
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C. The ’731 Patent
The ’731 patent issued on February 21, 2006, from an application
filed on July 30, 2002. Ex. 1001, codes (22), (45). The ’731 patent relates
to a “cover for an end of a ladder rail” that “includes a shell and a tread.” Id.
at Abstract. The ’731 patent describes a ladder rail end cover designed to
achieve certain goals, such as maintaining skid resistance, protecting the end
of the ladder rail, reducing susceptibility to wear and tear, allowing
inspection of the ladder rail without removal of the cover, and allowing
efficient production of the cover. Id. at 2:36–45. Figure 3 of the ’731 patent
is reproduced below.

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Figure 3 is an “an inward side perspective view of a cover for an end
of a ladder rail.” Ex. 1001, 3:1–2. Figure 3 depicts cover 10 having shell 32
and tread 34. Id. at 4:60–62. Shell 32 typically consists of a hard durable
material while tread 34 typically consists of a softer, skid-resistant material.
Id. at 5:6–9. Shell 32 includes opening 36, having channel 52, sized to
receive end 14 of front ladder rail 16. Id. at 5:15–17, 5:66–6:1. Shell 32
also includes exerior wall 42, interior wall 44, side walls 46 and 48, and
lower wall or base 50. Id. at 5:46–50. Figure 3 also depicts web
engagement member 59 extending upwardly from base 50, and forming slot
60 between engagement member 59 and exterior wall 42, with slot 60
receiving a portion of ladder rail web 31. Id. at 6:38–44. In Figure 3, “the
shell 32 has a substantially open side or face so that a portion of the ladder
rail 16 remains exposed or visible even after the cover 10 has been placed
over the end 14 of the ladder rail 16.” Id. at 6:61–64.
The ’731 patent also describes various methods of attaching tread 34
to the bottom of shell 32. Figures 7 and 8 of the ’731 patent are reproduced
below.

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Figure 7 “is an inward side view of the cover shown in FIG. 3,” while
Figure 8 “is an upper view of the cover shown in FIG. 3.” Ex. 1001, 3:9–11.
Figures 7 and 8 depict shell 32 having “shell interlocking or mating member
65” comprised of raised portions 78 surrounding holes 66. Id. at 7:43–55.
Figure 7 also depicts tread 34 having portion 67 that flowingly engages shell
interlocking member 65. Id. at 7:31–34. This arrangement allows
engagement between shell interlocking member 65 and tread portion 67 after
tread portion 67 has solidified, forming an interlocking bond between shell
32 and tread 34. Id. The ’731 patent also describes an interlocking chemical
bond between shell 32 and tread 34. See id. at 10:31–34, 11:44–12:15. Both
the physical bond and chemical bond comprise at least a portion of shell 32
and tread 34. Id. at 10:14–18.
The ’731 patent further describes the use of fasteners such as screws
or rivets “[i]n addition” to using at least one bond. Ex. 1001, 10:35–45. The
advantage of using fasteners in addition to at least one bond, according to
the ’731 patent, is an added “margin of safety” should the bond or fastener
fail. Id. at 10:40–45.
D. Challenged Claims
Petitioner challenges claims 8–16, 19, and 20. Of those, claims 8, 10,
12, and 14 are independent. Claim 8 is reproduced below.
8. A cover for an end of a ladder rail, the cover comprising:
a shell formed of at least one material, said shell having a size
suitable for engaging the ladder rail, said shell having a first
wall with a pair of side walls extending from opposite ends
thereof, said shell having an entirely open face opposite said
first wall and between said pair of side walls, said open face
suitable for exposing a portion of the ladder rail when the
ladder rail and said shell are engaged; and
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a tread formed of at least one other material, said tread being
engaged with said shell at least partially by at least one bond,
said at least one bond comprising at least a portion of said
shell and at least a portion of said tread.
Ex. 1001, 17:10–24.
E. Asserted Grounds
Petitioner asserts four grounds of unpatentability. Specifically,
Petitioner challenges (Pet. 14):
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
8–11 102(a) Louisville Catalog1
8–11 102(b) Louisville Catalog
8–16 103(a) Plotner,2 Louisville Catalog
8–16 103(a) Plotner, Louisville Catalog, Werner Brochure3
19, 20 103(a)
Plotner, Louisville Catalog,
Werner Brochure, Modern
Plastics Handbook4

1 Petitioner refers to three documents as the “Louisville Catalogs.” Pet. 7–8
(citing Louisville Ladder Professional Product Catalog (distribution list
dated May 18, 1999) (Ex. 1002); Rhino 375 Fiberglass Step Ladder
(Ex. 1003); Louisville Ladder New Full Line Catalog 2001 (Ex. 1004)). For
its assertions, Petitioner relies on a “Rhino 375” ladder shown in each
catalog and contends that the relevant disclosure is common to all three
catalogs. Id. at 8, 14. We do not view Petitioner’s assertions as relying on
any improper combination of the Louisville Catalogs, as Patent Owner
contends. See PO Resp. 20–21. We will refer and cite to the Louisville
Ladder New Full Line Catalog 2001 (Ex. 1004) as the “Louisville Catalog”
when addressing Petitioner’s contentions. See Tr. 55:21–23 (Petitioner’s
counsel stating that “the Board can pick any one of those catalogs because
they all show the same ladder, they all show the same feature”).
2 U.S. Patent No. 5,636,706, issued June 10, 1997 (Ex. 1005) (“Plotner”).
3 T7200 Werner Pro Series (printed April 2000) (Ex. 1006) (“Werner
Brochure”).
4 Modern Plastics and Charles A. Harper, Modern Plastics Handbook,
(Charles A. Harper, ed. 2000) (Ex. 1007) (“Modern Plastics Handbook”).
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Petitioner also relies on the Declaration of Jon B. Ver Halen. Ex.
1010 (“Ver Halen Declaration”).
Patent Owner relies on the Declaration of Thomas J. Schmitt (Ex.
2002) and the Declaration of Mack A. Quan (Ex. 2003).
ANALYSIS
A. Legal Standards
To prevail in its challenges, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e) (2012); 37 C.F.R.
§ 42.1(d) (2018). “In an [inter partes review], the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof
in an inter partes review).
Petitioner relies on both anticipation and obviousness in its challenges
to the claims of the ’731 patent. To anticipate a claim under 35 U.S.C.
§ 102, “a single prior art reference must expressly or inherently disclose
each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1334 (Fed. Cir. 2008). That “single reference must describe the
claimed invention with sufficient precision and detail to establish that the
subject matter existed in the prior art.” Verve, LLC v. Crane Cams, Inc., 311
F.3d 1116, 1120 (Fed. Cir. 2002).
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A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person of ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). “The person of ordinary skill in the art is a
hypothetical person who is presumed to have known the relevant art” at the
time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995). Factors that may be considered in determining the level of ordinary
skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
level of active workers in the field. Id. In a given case, one or more factors
may predominate. Id.
Petitioner contends that a “person having ordinary skill in the art
would have had a bachelor’s degree in mechanical engineering, industrial
engineering or a related field, plus 5–7 years of experience with ladder
design or analysis.” Pet. 7. Patent Owner contends that “a POSITA would
have had an undergraduate degree in a relevant engineering field (e.g.,
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mechanical engineering) with 3–5 years of practical experience in the
manufacture, engineering, and/or research, development, and testing of
ladders and related components. Of course, more education can supplement
relevant experience and vice versa.” PO Resp. 6.
The parties’ proposals do not differ in any respect that would suggest
our determination on this issue would impact any of our findings in this
case. At oral argument, the parties agreed that no issue in this case turns on
the differences in the parties’ respective proposals. See Tr. 31:18–24 (Patent
Owner’s counsel stating that “we do not believe that that slight difference
between Petitioner and Patent Owner would be dispositive of any issue in
the case”), 55:25–56:9 (Petitioner’s counsel stating that “all parties and
experts agree that there’s no material difference in the proposed level of
ordinary skill in the art”).
The parties’ respective proposals differ in the number of years of
experience required in the ladder design field; Petitioner proposes 5–7 years
of experience, while Patent Owner proposes 3–5 years. Pet. 7; PO Resp. 6.
Based on the full record before us, because the asserted references describe
problems and solutions of ladder design that are relatively straightforward
and presumably understandable with only a few years of industry
experience, we apply Patent Owner’s proposal to our analysis because it
requires fewer years of that experience.
C. Claim Construction
In inter partes reviews, we interpret claims in the same manner used
in a civil action under 35 U.S.C. § 282(b). See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358
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(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (setting forth claim
construction approach in district court cases). Under that standard, we
generally give claim terms their ordinary and customary meaning, as would
have been understood by a person of ordinary skill in the art at the time of
the invention, in light of the language of the claims, the specification, and
the prosecution history. See Phillips, 415 F.3d at 1313–14. Although
extrinsic evidence, when available, may also be useful when construing
claim terms under this standard, extrinsic evidence is generally “less
reliable” than the intrinsic record. See id. at 1318–19. Only terms that are in
controversy need to be construed, and then only to the extent necessary to
resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
The parties propose differing constructions for the terms “bond,”
“entirely open face,” and “extending upwardly.” We address each limitation
in turn below.
1. “Bond”
Petitioner contends that we should construe the phrase “at least one
bond, said at least one bond comprising at least a portion of said shell and at
least a portion of said tread” (the “bond limitation”) in each of the
challenged claims as covering “any type of bond.” Pet. 12. According to
Petitioner, “[b]y necessity, a bond between two objects comprises at least a
portion of each object.” Id. Petitioner further contends that the specification
supports its construction by describing three types of bonds—“interlocking
mating members, chemical-type bonds, and mechanical fasteners.” Id.
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(citing Ex. 1001, 10:18–40). Petitioner also relies on claim 1, which is not
challenged, and which requires a “bond independent of mechanical
fasteners.” Id. at 13. Petitioner contends that the challenged claims omit
this language and, therefore, cover bonds with mechanical fasteners. Id.
(citing Ex. 1001, 17:10–18:49; Ex. 1010 ¶¶ 111–112). Petitioner also
alleges that the prosecution history supports its construction because the
Examiner stated that the “independent of mechanical fasteners” language in
claim 1 would be given no patentable weight because it was a negative
limitation. Id. (citing Ex. 1018, 191, 201).
Patent Owner argues that the bond limitation should be construed to
mean “at least one means of chemical and/or physical engagement, said at
least one engagement means comprising at least a portion of said shell and at
least a portion of said tread.” PO Resp. 7. Patent Owner describes the
claimed “bond” as including a physical bond, such as an interlocking bond, a
chemical bond, or a combination of both. Id. at 8 (citing Ex. 1001, 7:28–42,
10:14–29, 11:34–43, 12:64–14:2). Patent Owner takes issue with the
breadth of Petitioner’s construction, which includes “any type of bond,
including mechanical fasteners.” Id. at 9. Patent Owner contends that
including mechanical fasteners cannot be correct because claim 16 “further”
requires “a mechanical fastener,” which would be rendered meaningless if
independent claim 14 already included mechanical fasteners. Id. Patent
Owner also relies on the specification, which distinguishes between the
claimed bonds and mechanical fasteners. Id. at 10 (citing Ex. 1001, 10:35–
45, 14:3–14). Patent Owner further relies on the prosecution history with
respect to claim 1. Patent Owner argues that, during prosecution, the
limitation “independent of mechanical fasteners” did not narrow the scope of
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“bond,” which the Examiner confirmed by treating the limitation as not
limiting. Id. at 10–11. According to Patent Owner, this prosecution history
supports its position that the “bond” limitation already excluded fasteners
from its scope. Id. at 11–13.
In its Reply, Petitioner contends that the Specification uses the term
“bond” broadly to cover a wide range of bonds. Pet. Reply 8–9 (citing Ex.
1001, 1018–21). Petitioner also argues that the claim’s “comprising”
transition allows for the inclusion of fasteners, the prosecution history
suggests that the limitation should include fasteners, and dependent claim 16
does not mandate Patent Owner’s narrow construction. Id. at 9–10.
Petitioner also contends that Patent Owner has put a further gloss on its
construction by trying to limit the limitation to certain preferred
embodiments that discuss bonds formed by flowing the tread material into
the shell. Id. at 11 (citing Paper 12, 8; Ex. 2002 ¶ 44; Ex. 2003 ¶ 68).
In its Sur-reply, Patent Owner argues that (1) the Specification makes
clear that the bond includes more than a physical attachment, such as a
fastener or rivet; (2) although the term “comprising” does not exclude
fasteners, it “cannot be used to subvert the ordinary and customary meaning
of the term ‘bond,’”; and (3) the file history shows that applicants
“repeatedly clarified that the ‘bond’ did not include mechanical fasteners.”
PO Sur-reply 3–5. Patent Owner also argues that dependent claim 16
supports a broad construction of “bond” in claim 14 because it refers to a
“cover of claim 14, further comprising a mechanical fastener,” not that claim
14’s bond “comprises a fastener.” Id. at 5.
We agree with Patent Owner that the proper construction of “bond”
does not encompass mechanical fasteners. First, as to the claim language,
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we disagree with Petitioner’s argument that all bonds, including fasteners,
necessarily include a portion of the shell and tread as the claim requires.
Pet. 12. Instead, the requirement that the bond include a portion of the shell
and a portion of the tread suggests something more than a third structure
such as a fastener as the bonding structure. In other words, when a fastener
joins a tread to a shell, neither the tread nor the shell aids in holding the two
together; the fastener performs that “bonding” function. Further,
independent claim 14 already requires a “bond,” and claim 16, which
depends from claim 14, “further” requires a “mechanical fastener” in
addition to the bond, without describing it as a species of bond. Ex. 1001,
18:40–41. Reading the “bond” of claim 14 to encompass the “mechanical
fastener” of claim 16 would conflict with claim 16’s treatment of the
mechanical fastener requirement as separate from the bond limitation. As
Patent Owner notes, claim 16 does not state that the bond further comprises
a fastener; it states that the cover further comprises a fastener. See PO Sur-
reply 5. This claim structure at least suggests that “bond” in claim 14 does
not encompass fasteners. Further, the use of the “comprising” transition
language merely allows for the addition of unclaimed fasteners to the
independent claims without falling outside the scope of the claims. That
well known aspect of the “comprising” language does not mandate a broader
reading of “bond” to include fasteners.
Second, we agree with Patent Owner that the Specification
distinguishes between the claimed bonds and the use of mechanical
fasteners. PO Resp. 9–10. First, in the Background, the Specification
stresses the need for a bond that goes beyond the prior art use of mechanical
fasteners. See Ex. 1001, 2:19–27. Later, in the Detailed Description, the
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Specification describes the use of mechanical fasteners as “in addition” to
the physical or chemical bonds, and as a further safety feature should the
bond fail. See id. at 10:35–45; 14:3–14. The most natural reading of these
passages supports Patent Owner’s position that fasteners are distinct from,
and could optionally be used in addition to, bonds, not that fasteners are a
type of bond.
Third, the prosecution history does not support Petitioner’s argument
that “bond” must encompass fasteners. For example, the applicants’
statement during prosecution that the claimed bond “independent of
mechanical fasteners” in claim 1 does not narrow the scope of the claims,
and the Examiner’s apparent agreement does not support Petitioner’s
position that the claimed “bond” includes mechanical fasteners. Ex. 1018,
191, 201. The failure of that limitation to narrow claim 1 could also support
Patent Owner’s reading that the bond limitation already excluded
mechanical fasteners, rendering the additional language superfluous, and
does not amount to a clear statement regarding the breadth of the bond
limitation. Petitioner’s reliance on further statements by the Examiner
during prosecution that gives “bond” a broad construction that includes
fasteners does not require such a broad reading here, especially when the
applicant consistently maintained its narrower view of the language during
prosecution. See Pet. Reply 9–10; PO Sur-reply 4–5; Ex. 1018, 191.
Based on the foregoing, we view the claim language, when read in
light of the other claims and Specification, as strongly supporting Patent
Owner’s construction. The prosecution history contains statements by the
Examiner and applicants that support both parties’ positions, and due to that
lack of clarity the prosecution history does not require a broader construction
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than the claims and Specification indicate. Although we considered
Petitioner’s declarant testimony in support of its broader construction, we
find that testimony at odds with the intrinsic record and not sufficiently
persuasive to compel a different construction. See, e.g. Ex. 1010 ¶¶ 110–
111; Phillips, 415 F.3d at 1318 (“[A] court should discount any expert
testimony ‘that is clearly at odds with the claim construction mandated by
the claims themselves, the written description, and the prosecution history.’”
(citation omitted)). Accordingly, we do not adopt Petitioner’s proposed
construction of the claimed “bond” to include mechanical fasteners. We
instead adopt Patent Owner’s construction of the “bond” limitation: “at least
one means of chemical and/or physical engagement, said at least one
engagement means comprising at least a portion of said shell and at least a
portion of said tread.” Importantly, the claimed “bond” does not encompass
mechanical fasteners.
2. “Entirely Open Face”
Independent claim 8 requires a “shell having an entirely open face
opposite said first wall and between said pair of side walls, said open face
suitable for exposing a portion of the ladder rail when the ladder rail and
said shell are engaged” (emphasis added). Dependent claim 13 requires a
similar limitation, but without a first wall or side walls. See Ex. 1001,
18:20–23. Patent Owner contends that we should construe “entirely open
face” “to refer to a face of the shell by which the lowermost interior surface
and corners of the ladder rail are sufficiently exposed both for inspection
during use and proper fitting of the shell.” PO Resp. 13. According to
Patent Owner, the ladder industry knew that the bottom ends of fiberglass
ladder rails could crack, and conventional brackets or shoes placed on the
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ends of the rails would obscure a view of those rails. Id. at 13–14 (citing Ex.
2002 ¶¶ 52–53). Patent Owner points to the Specification as describing a
solution to this problem in the form of a “substantially open face” of shell
32, which supports construing the claimed “entirely open face” to exclude
structures that prevent inspection of the ladder rails. Id. at 14–15 (citing Ex.
1001, 1:66–2:5, 7:10–14). Patent Owner also contends that the prosecution
history supports this construction, arguing that applicants distinguished the
prior art Hurd reference on this basis. Id. at 15–17 (citing Ex. 1018, 211,
229, 242–43, 250, 258; Ex. 2004, 50–53, 100–104, Figs. 1, 2, 6).
Petitioner contends that Patent Owner’s proposed construction
includes terms that are not found in the claims, Specification, or file history,
and therefore the intrinsic record fails to support such a narrow construction.
Pet. Reply 3. Petitioner contends that the claim term “face” refers to one
side of the shell, which means “entirely open face” refers to the open side or
face of shell 32 described in the Specification and depicted in the Figures.
Id. at 3–4 (citing Ex. 1001, 6:61–64, 6:66–7:2, 11:1–20, Figs. 3, 9).
Petitioner argues that claim 8 does not require any particular portion of the
ladder rail to be exposed, such as “the lowermost interior surface and corners
of the ladder rail,” as set forth in Patent Owner’s proposed construction. Id.
at 6.
In its Sur-reply, Patent Owner argues that the open face is not limited
to one side of the shell, as Petitioner contends, and can be anywhere along
the base of the shell, between the sidewalls. PO Sur-reply 6–7 (citing Ex.
1001, Fig. 3; Ex. 1025, 134:3–139:17). Patent Owner further argues that the
Specification further supports the view that the entirely open face “is
inclusive of the entire area between the side walls.” Id. at 8 (citing Ex. 1001,
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6:66–7:14). Patent Owner also argues that the portion that must be exposed
by the entirely open face “necessarily includes the lowermost interior
surfaces and corners,” and argues that the Specification “makes clear” that
this was “the fundamental advantage offered by” the claimed end rail cover.
Id. at 9.
We agree with Petitioner that Patent Owner’s proposed construction
for “entirely open face” is too narrow. The crux of Patent Owner’s
construction is that “the lowermost interior surface and corners of the ladder
rail are sufficiently exposed both for inspection during use and proper fitting
of the shell.” PO Resp. 13. The language of claim 8 does not support this
construction. Claim 8 defines how much of the ladder rail must be exposed,
and merely states that “a portion of the ladder rail” must be exposed when
the shell and rail are engaged. Ex. 1001, 17:16–19; see also id. at 18:20–22
(claim 13 requiring “said shell defines an entirely open face so that a portion
of the ladder rail is exposed”). The claim language does not state that any
particular “portion” of the rail, much less “the lowermost interior surface
and corners” of the rail, must be exposed. The absence of such specificity in
the claim language counsels against reading in that limitation. In addition,
the Specification does not suggest that the exposed “portion” of the rail
referred to in claim 8 must include those portions identified in Patent
Owner’s construction. Instead, the Specification refers broadly to the
disadvantages of needing to remove protective boots to inspect the rail, and
the need to expose enough of the rail to perform an inspection, without
mentioning any specific portions that must be exposed. Ex. 1001, 1:66–2:5,
6:61–7:14. Patent Owner also acknowledges that the claims cover Figures 3
and 9, and Figure 3 shows structures occluding portions of the lowermost
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portion of the ladder rail, such as rail flange retainers and web engagement
member 59. Patent Owner’s effort to construe the claim to cover a face that
exposes specific portions of the ladder rail that are somewhat exposed in its
own figures, while not allowing for any less exposure of the rail, demands
much more precision than the claim language and Specification provide.
The prosecution history also fails to provide that specificity, as at most it
reveals that the applicants distinguished the claims over prior art that largely
surrounded the ladder rail on four sides, exposing only small portions of the
rail. See Ex. 1018, 250; Ex. 2004, Figs. 1, 2, 6.
Based on the foregoing, we decline to adopt Patent Owner’s proposed
construction. The parties further dispute whether the claimed “face”
corresponds to the plane or missing side opposite exterior wall 42, above
interior wall 44 (as Petitioner proposes), or includes any plane along base 50
within the interior of shell 32 (as Patent Owner proposes). See Pet. Reply 4–
5; PO Sur-reply 6–7. We need not resolve this issue because it appears that
Patent Owner’s proposal is broader than, and would encompass, the “face”
Petitioner identifies, and would therefore fail to aid Patent Owner in its
efforts to distinguish over the prior art. Nevertheless, we agree with
Petitioner that the more natural reading of “face,” in light of the
Specification, refers to a single plane on the side opposite exterior wall 42
and above interior wall 44. See Ex. 1001, 6:61–7:10. This comports with
the “entirely open” aspect of the claim language, as only the side opposite
interior wall 42 and above interior wall 44 is shown as “entirely open” in
Figures 3 and 9, while the inside of the shell contains structures that render
that area not entirely open. See id. at Figs. 3, 9.
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3. “Extending Upwardly”
Independent claim 10 requires a “rail flange retainer extending
upwardly from a bottom of said shell.” Patent Owner contends that we
should construe “extending upwardly” “to require that the recited rail flange
retainers are integral with the shell.” PO Resp. 17 (citing Ex. 2002 ¶ 58).
Patent Owner argues that the Specification supports its construction by
describing rail flange retainers 54 and 56 that impede twisting of cover 10
with respect to the ladder rail. Id. (citing Ex. 1001, 5:47–50, 6:14–24).
According to Patent Owner, this makes clear “that the shell of the claimed
cover is a unitary construction—a single component—and the respective
side walls and rail flange retainers included as part of the shell form a part of
that unitary construction.” Id. at 17–18 (citing Ex. 2002 ¶ 59). Patent
Owner also points to the Specification’s figures as limited to shells having
“a one-piece, unitary construction,” and to the description of manufacturing
methods employing plastic that would produce only such shells. Id. at 18–
19 (citing Ex. 1001, 11:18–33, 11:45–12:15, Figs. 3–18; Ex. 2002 ¶¶ 60–
61). Patent Owner further contends that the claim language itself, referring
to retainers that extend upwardly from “said shell,” when read in light of the
Specification, supports Patent Owner’s construction. Id. at 19 (citing Ex.
2002 ¶ 62).
Petitioner disagrees with Patent Owner’s “integral” construction and
contends that one of ordinary skill in the art “would have known an integral
design is necessary only when using certain plastic materials that have
limited strength.” Pet. Reply 7 (citing Ex. 2002 ¶¶ 39, 58–61; Ex. 1025,
128:18–129:6). Petitioner argues that stronger plastic or metal shells would
not require an integral design and that claim 10 does not limit the shell to a
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plastic material that requires integral construction. Id. (citing Ex. 2002 ¶ 61;
Ex. 1025, 129:12–20, 130:5–12, 153:15–155:6).
In its Sur-reply, Patent Owner argues that the possible use of a
stronger shell material such as metal does not counsel against the need for an
integral shell. PO Sur-reply 11. According to Patent Owner, “the ’731
Patent is necessarily describing a construction in which the rail flange
retainers are integral with the base of the shell.” PO Sur-reply 11 (citing Ex.
2002 ¶ 61).
We agree with Petitioner that “rail flange retainer extending upwardly
from a bottom of said shell” in claim 10 does not require rail flange retainers
that are integral with the shell base as Patent Owner proposes. First, nothing
in the claim language suggests an integral construction, and Patent Owner
does not suggest otherwise by arguing that “extending upwardly,” standing
alone, requires an integral construction. Second, nothing in the claim
language suggests a shell material made of plastic that would necessarily be
made using an integral, one-piece construction. Third, while the
Specification may disclose integral, one-piece shells, and retainers that help
align the ladder rail and impede twisting of the rail, nothing in the
Specification suggests that these functions can only be performed by a
unitary shell with integral retainers. See Ex. 1001, 6:14–24. We recognize
that Patent Owner’s declarant reads the Specification as necessarily
requiring such a unitary design based on these same passages, but we decline
to read such a limitation into the claims where the claim language and
Specification remains silent on the need for an “integral” shell, and we find
that testimony unpersuasive. See Ex. 2002 ¶¶ 59–62. Based on the
foregoing, we do not construe “rail flange retainer extending upwardly from
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the bottom of said shell” in claim 10 as requiring rail flange retainers that are
integral with the shell.
C. Challenges Under 35 U.S.C. § 102(a)/(b) Based on the
Louisville Catalog and Under 35 U.S.C. § 103(a) Based on
Plotner and the Louisville Catalog.
Petitioner challenges claims 8–11 under 35 U.S.C. § 102(a)/(b) as
anticipated by the Louisville Catalog and claims 8–16 under 35 U.S.C.
§ 103(a) as unpatentable over Plotner and the Louisville Catalog. Pet. 14–
48. Petitioner expressly conditions both of these challenges on our adoption
of Petitioner’s proposed construction of the bond limitation that includes
mechanical fasteners. Id. at 14, 21. For the reasons discussed above in our
construction of the bond limitation, we reject Petitioner’s proposed
construction and conclude that “bond” does not include mechanical
fasteners. Accordingly, because we reject Petitioner’s stated premise for
these challenges, we conclude that Petitioner has not proven by a
preponderance of the evidence that claims 8–11 are anticipated by the
Louisville Catalog or that claims 8–16 would have been obvious based on
Plotner and the Louisville Catalog.
D. Obviousness of Claims 8–16 Based on the Louisville Catalog,
Plotner, and the Werner Brochure
Petitioner challenges claims 8–16 under 35 U.S.C. § 103(a) as
unpatentable over the Louisville Catalog, Plotner, and the Werner Brochure.
Pet. 49–54. For this ground, Petitioner cites to the asserted references and
the Ver Halen Declaration. Id. For purposes of this challenge, Petitioner
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assumes that we construe the bond limitation in a manner that excludes
fasteners, consistent with our claim construction above. Id. at 49.5
Patent Owner, relying on its declarant testimony, contends that the
references fail to disclose several limitations of the challenged claims and
that one of ordinary skill in the art would not have combined the references.
PO Resp. 20–52.
1. The Louisville Catalog
The Louisville Catalog discloses a series of ladders as part of
Louisville Ladder’s 2001 “Full Line Catalog.” Ex. 1004, 1. Petitioner relies
on the “Rhino 375” ladder shown on page 2 of the Louisville Catalog. Id. at
2; Pet. 8. Photos depicting the Rhino 375 Ladder from the Louisville
Catalog appear below.

5 Both parties incorporate their arguments made in the context of the
previous challenges as to the Louisville Catalog and Plotner into their
arguments for this challenge. See Pet. 49 (relying on arguments that the
Louisville Catalog and Plotner disclose all limitations of claims 8–16 except
the bond limitation); PO Resp. 47 (arguing that the addition of the Werner
Brochure to the combination does not cure the deficiencies Patent Owner
identified in Petitioner’s Louisville Catalog and Plotner arguments).
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The photo on the upper left depicts the entire ladder, the photo on the
upper right shows an enlarged photo of the lower portion of the ladder, and
the photo on the bottom shows an enlarged view of the bottom of one rail.
Ex. 1004, 2; Pet. 9–10. The bottom of the ladder rail includes a “FULL
METAL BOOT” on the lower portion of the ladder rails. Id. The text
accompanying the photos describes the FULL METAL BOOT as
“[a]luminum angle feet with thick slip resistant rubber tread. Reinforcement
plates wrap around the rail for unsurpassed durability.” Id.
2. Plotner
Plotner discloses “[a] member for connecting a rail to a horizontal
element of a ladder.” Ex. 1005, Abstract. The member includes first portion
30 connected to first horizontal step 104 and second portion 32 connected to
ladder rail 102. Id. at 2:65–3:6. Second portion 32 includes integral and
angled foot 38 that receives bottom 18 of side rail 102. Id. at 3:15–21, Figs.
2, 2d, 4, 5c, 6a, 6b. Plotner also discloses foot pad 40 attached to bottom 42
of foot 38. Id. at 3:26–30, Figs. 2, 2d, 4, 5c, 6a, 6b.
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Plotner discloses various options for attachment of its invention to the
bottom of the ladder rail. Plotner discloses members that fit within the
inside of the rail or wrap around the outside of the rail. See Ex. 1005, 3:54–
57, 5:22–26, Figs. 2b, 2c, 6a. In one embodiment, first and second arms
connect to central body 75 to form a C-shaped cross section. Id. at 3:42–48.
Those structures, in combination with second portion flange 79, define
channel 81 that receives rail 102 on the outside of the C-shaped cross
section. Id. at 3:51–57, Figs. 2b, 2c. A second embodiment includes guard
section 60 positioned around the rail that extends around rail 102 to protect
it. Id. at 5:19–26, Figs. 6a, 6c. A third embodiment discloses member 100
that connects to the inside of the rail using central body 75 and to a ladder
shoe via shoe attachment portion 155. Id. at 8:58–65, 9:11–16, Figs. 8a, 8b,
9a, 9b, 9d.
3. The Werner Brochure
The Werner Brochure discloses a “T7200 PRO SERIES” ladder.
Ex. 1006. A photo from the Werner Brochure is reproduced below.
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The photo above shows the lower portion of the ladder rail in the
Werner Brochure. Ex. 1006. The photo shows the ladder rail in yellow, and
a “rail shield” in gray. Id. Also shown are five black protrusions extending
upward from the bottom of the rail shield. Id. The photo also depicts a
portion of a black tread under the bottom of the rail shield. Id.
4. Independent Claim 8
For purposes of this challenge to claim 8, Petitioner asserts that the
Louisville Catalog discloses all of the claim limitations with the exception of
the bond limitation. See id. at 14–18, 49. Petitioner also asserts that Plotner
teaches all of the limitations of claim 8 with the exception of the bond
limitation and the limitation requiring a tread material different from the
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shell material, which Petitioner contends the Werner Brochure discloses and
would have been obvious based on the Louisville Catalog. See id. at 21–29,
49. Petitioner contends that the Werner Brochure discloses the bond
limitation and that one of ordinary skill in the art would have been motivated
to combine the references to arrive at the claimed invention for a number of
reasons. Id. at 49–54. Petitioner provides analysis of each limitation in
claim 8, with citations to the references in question that correspond to each
of the claim limitations. Pet. 14–18, 21–29, 49–54. Petitioner also cites to
the relevant declarant testimony. Id. (citing various portions of Ex. 1010).
a. Limitations Disclosed by Louisville Catalog
We first address whether Petitioner establishes adequately that the
Louisville Catalog discloses all of the limitations of claim 8 with the
exception of the bond limitation. The preamble recites a “cover for an end
of a ladder rail, the cover comprising.” Petitioner contends that the
Louisville Catalog discloses a metal FULL METAL BOOT that “is a cover
for the end of a ladder rail.” Pet. 14–15 (citing Ex. 1001, 3:51–53; Ex. 1004,
2; Ex. 1010 ¶ 106). The first limitation in the body of claim 8 requires “a
shell formed of at least one material, said shell having a size suitable for
engaging the ladder rail, said shell having a first wall with a pair of side
walls extending from opposite ends thereof.” Petitioner contends that the
FULL METAL BOOT includes a shell made of a first material (metal)
“sized to engage the bottom of the ladder rail” and having a first wall and a
pair of side walls extending from opposite sides of the first wall. Pet. 15
(citing Ex. 1004, 2; Ex. 1010 ¶ 107). Claim 8 also requires a “tread formed
of at least one other material,” i.e., different than the “first material” of the
shell. Petitioner alleges that the FULL METAL BOOT includes a “thick
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rubber” tread “different from the metal from which the shell is formed.” Pet.
17 (citing Ex. 1004, 2; Ex. 1010 ¶ 109). Patent Owner does not address
Petitioner’s arguments and evidence as to these portions of claim 8 or
dispute that the Louisville Catalog discloses these limitations.6
We are persuaded by Petitioner’s arguments and evidence, and find
that the Louisville Catalog discloses a “cover for an end of a ladder rail,” to
the extent the preamble limits the claim, and “a shell formed of at least one
material” that engages the rail, and has the claimed first wall and side walls,
because the Louisville Ladder’s FULL METAL Boot includes these
features. See Ex. 1004, 2; Ex. 1010 ¶¶ 106–07. We also find that the
Louisville Catalog discloses a tread formed of “thick rubber” distinct from
the metal shell, which satisfies the limitation requiring a “tread formed of at
least one other material.” See Ex. 1004, 2; Ex. 1010 ¶ 109).
As noted above in the claim construction analysis, claim 8 also
requires “an entirely open face opposite said first wall and between said pair
of side walls, said open face suitable for exposing a portion of the ladder rail
when the ladder rail and said shell are engaged” (the “entirely open face”
limitation). Petitioner contends, with reference to the alleged similarity

6 In the circumstances where Patent Owner has chosen not to address or
dispute Petitioner’s arguments and evidence, we view Patent Owner’s
arguments as waived. See In re Nuvasive, Inc., 841 F.3d 966, 974 (Fed. Cir.
2016) (“Although the Board did not make findings as to whether any of the
other claim limitations (such as fusion apertures or anti-migration teeth) are
disclosed in the prior art, it did not have to: Nuvasive did not present
arguments about those limitations to the Board. . . . The Board, having found
the only disputed limitations together in one reference, was not required to
address undisputed matters.”); Paper 11, 6–7 (emphasizing that “any
arguments for patentability not raised in the response may be deemed
waived”).
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between the ’731 patent’s Figure 3 and the FULL METAL BOOT, that the
FULL METAL BOOT discloses an entirely open face opposite the first wall.
Pet. 16 (citing Ex. 1001, Fig. 3; Ex. 1004, 2; Ex. 1010 ¶ 108). Patent
Owner, relying on its proposed construction for “entirely open face,” argues
that the Louisville Catalog fails to disclose the limitation because its shell
“includes a plate opposite the external wall and between a pair of side
walls.” PO Resp. 22. According to Patent Owner, the plate “severely
restricts the inspection of the bottom ends of the ladder rail and, in fact,
completely restricts almost the full width of the web portion of the ladder
rail from view at the lowermost portion of the rail.” Id. at 22–23 (citing Ex.
2002 ¶ 65); see also PO Sur-reply 12–14. Petitioner, in Reply, contends that
the plate in the Louisville Catalog “is not even in the same plane as the face
of the shell ‘opposite said first wall,’ and therefore cannot prevent the ‘face’
from being ‘entirely open.’” Pet. Reply 12 (emphasis removed) (citing Ex.
2002 ¶ 65); see also id. at 13–14 (citing Pet. 16; Ex. 1001, Fig. 3; Ex. 1010
¶¶ 58–59, 63; Ex. 1025, 75:6–76:13, 98:17–99:7, 100:1–3, 132:10–135:6,
136:16–137:9, 145:2–5).
Because Patent Owner premises its argument on a construction of
“entirely open face” that we rejected above, we do not find Patent Owner’s
arguments convincing. We are persuaded by Petitioner’s arguments and
evidence, and find that the Louisville Catalog discloses a “an entirely open
face opposite said first wall and between said pair of side walls, said open
face suitable for exposing a portion of the ladder rail when the ladder rail
and said shell are engaged.” See Pet. 16; Pet. Reply 12–14. The Louisville
Catalog discloses a shell with an entirely open face opposite the first wall
between the side walls, exposing a portion of the ladder rail. See, e.g., Ex.
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1004, 2; Pet. Reply 12 (depicting open face with dotted lines). The claim
requires nothing further.
Based on the foregoing, we find that Petitioner has established by a
preponderance of the evidence that the Louisville Catalog discloses all of the
limitations of claim 8 with the exception of the bond limitation.
b. Limitations Disclosed by Plotner
Petitioner asserts that Plotner discloses several of the same
limitations of claim 8 as the Louisville Catalog.7 Pet. 21–29. For example,
Petitioner alleges that Plotner discloses the “cover for an end of a ladder
rail” in the preamble. Pet. 21–22 (citing Ex. 1001, 3:51–53; Ex. 1005, Figs.
1, 2, 3, 6, 8; Ex. 1010 ¶ 122). Petitioner also alleges that Plotner discloses “a
shell formed of at least one material, said shell having a size suitable for
engaging the ladder rail, said shell having a first wall with a pair of side
walls extending from opposite ends thereof.” Id. at 22–24 (citing Ex. 1001,
Fig. 3; Ex. 1005, 3:23–26, 3:41–50, 3:54–57, 5:19–24, Figs. 2b, 2c, 6a; Ex.
1010 ¶¶ 123–126, 128). Patent Owner does not address Petitioner’s
argument and evidence as to these limitations of claim 8 or dispute that
Plotner discloses these limitations. We are persuaded by Petitioner’s
argument and evidence, and find that Plotner discloses a “cover for an end of
a ladder rail” and “a shell formed of at least one material” that engages the
rail and has the claimed first wall and side walls, because the structure

7 Although we already concluded that Petitioner met its burden in showing
that the Louisville Catalog discloses all of the limitations of claim 8 with the
exception of the bond limitation, we address several of these limitations
again because Plotner’s disclosure of certain limitations of claim 8 bears on
Petitioner’s combination of Plotner with the Louisville Catalog and the
Werner Brochure, and the “entirely open face” issue is relevant to
Petitioner’s challenge to claim 13.
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shown and described in Plotner at the bottom of its ladder rails includes
these features. See Ex. 1005, 3:23–26, 3:41–50, 3:54–57, 5:19–24, Figs. 1,
2, 2b, 2c, 3, 6a, 8; Ex. 1010 ¶¶ 122–126, 128.
Petitioner also contends that Plotner discloses two embodiments,8
shown in Plotner’s Figures 6b and 8a, which disclose the “entirely open
face” limitation in claim 8. Pet. 24–26. Petitioner argues that these
embodiments have shells that wrap around the outside of the ladder rail,
exposing a portion of the interior of the ladder rail as required by the
limitation. See id. at 24–25 (citing Ex. 1005, Figs. 6b, 8a; Ex. 1010 ¶ 128).
Patent Owner argues that Petitioner mislabels Plotner’s Figure 6b, which
does not expose any portion of the ladder rail. PO Resp. 30 (citing Pet. 24;
Ex. 1005, Fig. 6b; Ex. 2003 ¶ 33). Patent Owner also argues that Petitioner
misinterprets the shell in Plotner’s Figure 8a, which “completely covers” the
ladder rail. Id. at 31–32 (citing Pet. 25; Ex. 1005, 5:46–47, 5:48–49, Fig. 8a;
Ex. 2003 ¶ 35).
In its Reply, Petitioner acknowledges that the embodiment of Figure
6b includes incorrect numeric labels applied by Plotner, but argues that
“[b]ased on common sense, one of ordinary skill in the art would have
interpreted Figure 6b like Mr. Ver Halen did.” Pet Reply 19–20. As to the
embodiment of Plotner’s Figure 8a, Petitioner argues that the supports used
in that embodiment expose at least a portion of the lower ladder rail. Id. at
17–19 (citing Ex. 1001, 6:64–66; Ex. 1005, 8:61–63, 9:11–16, Figs. 8a, 9a–
9e; Ex. 1026, 159:6–160:18, 160:20–162:21, 169:22–172:9). Petitioner also

8 Petitioner relies on a third embodiment in the Petition based on Plotner’s
Figure 2c, but does not maintain that argument in its Reply, and we need not
reach that argument.
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refers to a third embodiment, shown in Figures 2e and 5f, that expose a
portion of the ladder rail via a window similar to that described by the ’731
patent. Id. at 18–19 (citing Ex. 1001, 6:64–66; Ex. 1005, Figs. 2e, 5f).
Petitioner asserts that, given these teachings, viewed together with the
Louisville Catalog, the references teach “exposing a portion of the ladder
rail using a cover shell with an entirely open face,” and that it would have
been obvious to do so. Id. at 19–20 (citing Paper 1, 24–25, 47; Ex. 1010
¶¶ 127, 128, 171).
In its Sur-reply, Patent Owner argues that the supports shown in
Plotner’s Figures 9a–9e “significantly cover the interior of the ladder rail,”
and the other options for “cutouts” do not show the bottom end of the rail.
PO Sur-reply 19–21 (citing Paper 19, 17–19, 25; Ex. 1005, Figs. 2e, 5f, 8a,
9d). Patent Owner also argues that its interpretation of Plotner’s 6b is more
reasonable and supported than Petitioner’s interpretation. Id. at 20–21
(citing Ex. 1005, 5:19–25, 6:30–53, Figs., 2–2f, 3a–3h, 6b).
We are persuaded by Petitioner’s arguments and evidence, and find
that Plotner discloses the entirely open face limitation in claim 8. As to the
embodiment shown in Plotner’s Figure 8a, we agree with Petitioner that
Plotner contemplates using the supports shown in Figures 9a–9e in the
Figure 8a embodiment. See Ex. 1005, 9:11–16 (“As shown in FIG. 8a, . . . a
first rail member 28e and a second rail member 28f are used to provide
further support. The first rail member 28e and second rail member 28f are
preferably of a configuration as described above and shown in FIGS. 9a–
9e.”). We also agree with Petitioner that employing the supports of Figures
9a–9e will expose a portion of the interior of the ladder rail. See id. at Figs.
9a, 9d; Pet. Reply 17. Patent Owner seems to acknowledge that some
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portion of the ladder rail would be exposed if such supports are used, but
argues that more must be exposed to meet the claim limitation. PO Sur-
reply 19–20. We disagree. We did not adopt Patent Owner’s claim
construction for the entirely open face limitation, and as long as some
portion of the ladder rail is exposed by the entirely open face, even if not the
lowermost portion of the rail or a majority of the interior of the rail, the
limitation is disclosed. For similar reasons, we view the exposure of the
interior of the ladder rail through the cutouts or windows shown in Plotner’s
Figures 2e and 5f as sufficient to meet the limitation as well. See Ex. 1005,
Figs. 2e, 5f; Ex. 1001, 6:64–66 (describing similar “removed portion” or
“window” exposing the rail in the context of the ’731 patent); Pet. Reply 18–
19. We also find Petitioner’s explanation of Plotner’s Figure 6b persuasive,
and although labelling errors create some confusion, a person of ordinary
skill in the art would understand that Figure 6b shows an exposed ladder rail
on the interior of the rail, as explained by Mr. Ver Halen. See Pet. Reply
19–20; Ex. 1010 ¶ 127.
c. Bond Limitation Disclosed by the Werner Brochure
Petitioner contends that the Werner Brochure discloses the bond
limitation—“at least one bond, said at least one bond comprising at least a
portion of said shell and at least a portion of said tread.” Pet. 49. Petitioner
relies on the photo in the Werner Brochure showing “black studs extending
through the base of each ladder foot.” Id. at 49–50 (citing Ex. 1006; Ex.
1010 ¶¶ 181–182). According to Petitioner, one of ordinary skill in the art
would have understood that the black studs are not mechanical fasteners, and
are integral with the tread below the shell, because (1) the “studs extend
significantly above the top surface of the shell base,” unlike fasteners
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typically having flat heads; and (2) there are six studs, far more than
typically present when fasteners are used. Id. at 50–51 (citing Ex. 1010
¶ 183). Petitioner further contends that “[t]he studs enable the tread to be
removed with force for replacement purposes, but during normal operation
they secure the tread to the shell and prevent any of the edges to be lifted or
separated from the shell.” Id. at 51 (citing Ex. 1010 ¶ 183). Petitioner also
contends that “[t]he studs would have been formed when the tread was
made, probably using injection molding, and they are sized to fit through
holes in the base of each foot and to hold the tread securely in place.” Id.
Patent Owner argues that “the Werner Brochure does not clearly
depict the bond, if any, that is used” to secure its tread to its shell. PO Resp.
49 (citing Ex. 2003 ¶ 67). Patent Owner also argues that Mr. Ver Halen
“cannot be sure” of the bond used, and admits that the photo partially
obscures the alleged studs. Id. (citing Ex. 1010 ¶ 99). According to Patent
Owner, “[i]t is entirely unclear from the photos in the Werner Brochure
whether the black studs in the images” meet the requirements of the bond
limitation. Id. (citing Ex. 2003 ¶ 67). Patent Owner further argues that “it is
not even clear whether the ‘black studs’ identified in Werner Brochure are
integral with the tread of the foot pad shown in the Werner Brochure.” Id.
Even if the black studs are integral with the foot pad in the Werner
Brochure, Patent Owner contends that the connection would still fail to meet
the claim requirement that the bond include a portion of the shell and a
portion of the tread. Id. at 50 (citing Ex. 2003 ¶ 68). Patent Owner argues
that merely pressing the black studs through a hole and maintaining a
connection through friction, for example, would not be the type of
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“interlocking bond” described in the Specification that includes a portion of
the shell and tread. Id. at 50–51 (citing Ex. 1001, 7:30–42; Ex. 2003 ¶ 68).
In its Reply, Petitioner argues that “Mr. Ver Halen’s testimony is
detailed and reliable,” and addressed the content of the photos, known
bonding techniques, and specific reason why the black studs are integral
with the tread. Pet. Reply 25–26 (citing Ex. 1010 ¶¶ 181–186). Petitioner
also contends that Patent Owner reads in limitations from the Specification,
such as the specific interlocking bond formed by overmolding plastic, which
goes beyond the claim requirements. Id. at 26–27 (citing Paper 12, 50–51;
Ex. 1001, 11:59–63, 11:67–12:1, 12:64–13:24, 18:42–45).
In its Sur-reply, Patent Owner argues that it does not seek to read in
limitations from the Specification, and overmolding is just one method of
producing a physical means of engagement. PO Sur-reply 27. Patent Owner
maintains that the Werner Brochure lacks the required physical engagement
if the black studs are merely pressed into place and mere friction holds the
two pieces in place. Id.
As discussed above, we adopt Patent Owner’s proposed construction
for the bond limitation —“at least one means of chemical and/or physical
engagement, said at least one engagement means comprising at least a
portion of said shell and at least a portion of said tread.” As Patent Owner
stated in its Sur-reply, and then again at the oral hearing, it does not seek to
alter this construction by reading in further approaches from the
Specification. See PO Sur-reply 26–27; Tr. 30:16–21. Accordingly, the
issue is whether the Werner Brochure employs physical engagement means
that includes a portion of both the shell and tread because Petitioner does not
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assert that the Werner Brochure employs a chemical engagement
mechanism.
We are persuaded by Petitioner’s argument and evidence that the
Werner Brochure discloses black studs integral with the tread, that the black
studs are not fasteners, and that the black studs perform the function of
retaining the tread on the shell using physical engagement. See Pet. 49–51;
Pet. Reply 25–26. We credit Mr. Ver Halen’s detailed explanation of why
one of ordinary skill in the art would have interpreted the Werner Brochure
in that manner over the competing testimony of Mr. Quan, who merely
repeated Patent Owner’s assertion that the Werner Brochure was too unclear.
See Ex. 1010 ¶¶ 182–183; Ex. 2003 ¶¶ 67–68. We are also persuaded that
the Werner Brochure discloses the necessary “physical engagement” even if
it merely relies upon a friction fit between the tread and shell, contrary to
Patent Owner’s assertions. We again credit Mr. Ver Halen’s description of
the studs as “sized to fit through the holes in the base of each foot and to
hold the tread securely in place.” Ex. 1010 ¶ 183; see also id. at ¶ 187 (“The
tread may simply be pressed to the bottom of the shell until the studs pop
through the holes in the shell.”). Even if such an interaction relies on
friction to hold the tread and shell together, it necessarily relies on physical
interaction between a portion of both the tread and shell in order to remain
secured in place, satisfying that aspect of the claim language and our
construction of the claimed “bond.” Patent Owner suggests that something
more is required, and hints that a bond with more “interlocking” aspects is
required, but neither the claim language nor Patent Owner’s own proposed
construction, which we adopted and which Patent Owner does not seek to
alter, requires some sort of interlocking physical engagement that goes
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beyond the forcing tread studs through the shell holes with a friction fit. To
the extent that Patent Owner seeks to have us construe our construction by
narrowly defining “physical engagement” to only certain types of
interlocking engagements, physical engagement, we decline to do so.9
Based on the foregoing, we find that Petitioner has established that the
Werner Brochure teaches or suggests, and at a minimum renders obvious,
the claimed “bond.”
5. Independent Claim 10
Claim 10 includes many of the same limitations as claim 8, and for
those limitations, Petitioner’s arguments and evidence track those addressed
above in the context of claim 8. See Pet. 18–20, 31–36, 49. For example,
Petitioner asserts that the Louisville Catalog discloses the same preamble,
“shell” limitation,10 and “tread formed of at least one other material”
limitations in claim 10 for the same reasons as claim 8. Id. at 18–20.
Petitioner also asserts that Plotner discloses the preamble and shell limitation
for the same reasons discussed above, and relies on the Werner Brochure for
the bond limitation in the same manner for all claims. Id. at 31, 49. With
the exception of the bond limitation arguments we addressed and rejected

9 Patent Owner’s attempt to read “interlocking” into its construction also
begs the question of how much interlocking engagement is necessary.
Forcing black studs through a hole smaller than the studs so that they pop
out the other side and retain the tread on the shell, as Mr. Ver Halen
describes, would fall within an ordinary mean of “interlocking.” See Ex.
1010 ¶¶ 183, 187.
10 The shell limitation common to both claim 8 and claim 10 includes the
following language: “a shell formed of at least one material, said shell
having a size suitable for engaging the ladder rail, said shell having a first
wall with a pair of side walls extending from opposite ends thereof.” Ex.
1001, 17:12–15, 17:29–32.
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above, Patent Owner does not address Petitioner’s argument and evidence as
to these portions of claim 10 or dispute that the references disclose these
limitations. For the same reasons discussed above addressing the same
limitations in claim 8, we find that Petitioner has established that the
Louisville Catalog and Plotner disclose the preamble and shell limitation
common to both claims, the Louisville Catalog discloses a “tread formed of
at least one other material,” and the Werner Brochure discloses the bond
limitation.
Claim 10 differs from claim 8 in that it does not include an “entirely
open face” limitation and adds the following “rail flange retainer” limitation:
said shell further comprising: a rail flange retainer extending
upwardly from a bottom of said shell and disposed adjacent at
and in parallel relation to said first wall, said rail flange retainer
being sized to engage the ladder rail between said rail flange
retainer and the wall and being sized to expose a lower portion
of the ladder rail when the ladder rail is engaged between the first
wall and said rail flange retainer.
Ex. 1001, 17:32–41. Petitioner argues that both the Louisville Catalog and
Plotner discloses the rail flange retainer limitation. Pet. 19–20, 32–35. As
to the Louisville Catalog, Petitioner contends that the FULL METAL BOOT
includes rail flange retainers that extend upwardly from the bottom of its
shell and expose a lower portion of the ladder rail as required by the
limitation. Id. at 19–20 (citing Ex. 1004, 2; Ex. 1010 ¶ 117). Petitioner
points to rail flange retainers parallel to the first wall in the FULL METAL
BOOT shown in the Louisville Catalog, which hold the bottom of the rail
between the retainers and the first wall. See id. Patent Owner argues that
Petitioner improperly relies on a two-piece metal shell, leaving a small gap
between the bottom of the rail flange retainers and the bottom/base of the
shell. PO Resp. 27–28 (citing Pet. 19; Ex. 1004, 2; Ex. 1010 ¶ 107; Ex.
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2002 ¶ 75). According to Patent Owner, this gap shows that the rail flange
retainers “are not integral with the bottom of the shell and do not extend
upwardly from a bottom of the shell in the Louisville Catalogs.” Id. at 28
(citing Ex. 2002 ¶ 76); see also PO Sur-reply 17–18.
Because Patent Owner premises its argument on the adoption of its
proposed “integral” construction for the “rail flange retainer extending
upwardly” limitation, which we rejected above, we are not persuaded by
Patent Owner’s argument that the Louisville Catalog’s FULL METAL
BOOT fails to disclose the limitation because the rail flange retainers are not
integral with its base. See PO Resp. 27–28; Pet. Reply 16; PO Sur-reply 17–
18. We are persuaded by Petitioner’s argument and evidence, and find that
the Louisville Catalog discloses the rail flange retainer limitation. See Pet.
19–20; Ex. 1004, 2; Ex. 1010 ¶ 117. We need not determine whether
Plotner also discloses the limitation as Petitioner asserts. See Pet. 32–35;
Pet. Reply 21.
Claim 10 also requires “said bottom of said shell defining a perimeter,
said rail flange retainer positioned substantially inwardly of an edge of said
perimeter opposite said first wall.” Petitioner contends that the Louisville
Catalog positions its rail flange retainers “substantially inwardly of the edge
of the perimeter opposite the first wall of the FULL METAL BOOT.” Pet.
20 (citing Ex. 1004, 2; Ex. 1010 ¶ 118). As Petitioner puts it, the FULL
METAL BOOT rail flange retainers “are recessed from the edge of the
shell.” Id. In its Patent Owner Response, Patent Owner does not separately
address Petitioner’s assertion that the Louisville Catalog discloses this
limitation, or contest Petitioner’s arguments and evidence on this point. See
PO Resp. 27–28 (limiting dispute as to the Louisville Catalog to the rail
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flange retainer limitation addressed above). Petitioner noted the lack of any
dispute on this point in its Reply. See Pet. Reply 23 (“Louisville does not
dispute that the Louisville Catalogs showed rail flange retainers that were
positioned substantially inwardly of the edge of the base opposite the first
wall.”). In its Sur-reply, Patent Owner argues for the first time that the
Louisville Catalog’s FULL METAL BOOT does not disclose this limitation.
See PO Sur-reply 24–25.
Patent Owner’s arguments made for the first time in its Sur-reply are
waived because they were not made in the Patent Owner Response, and
Petitioner relied on their absence to its detriment and was deprived of the
chance to present arguments and evidence in its Reply to rebut Patent
Owner’s assertions. See Paper 11, 6–7 (emphasizing that “any arguments
for patentability not raised in the response may be deemed waived”); Pet.
Reply 23 (noting Patent Owner’s lack of dispute on this issue).
Even if Patent Owner did not waive its argument, we are persuaded by
Petitioner’s arguments and evidence, and find that the Louisville Catalog’s
FULL METAL BOOT discloses a “bottom of said shell defining a
perimeter, said rail flange retainer positioned substantially inwardly of an
edge of said perimeter opposite said first wall.” Neither party proposed a
formal construction for the “substantially inwardly” limitation, supported by
intrinsic or extrinsic evidence. Further, the Specification of the ’731 patent
does not define or use the term “substantially inward.” At most, the
Specification provides examples in its figures of approximate distances the
rail flange retainers are disposed away from the perimeter of the shell, which
presumably fall within the scope of “substantially inwardly.” See Ex. 1001,
Figs. 3, 8, 9, 14. These examples, however, do not define the minimum
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distance necessary to fall within the scope of the claim term. At the oral
hearing, Patent Owner’s counsel was unaware of any function the
“substantially inward” requirement served. Tr. 43:22–25. Given this lack of
guidance from the intrinsic and extrinsic record and the parties’ briefing, we
decline to limit “substantially inwardly” to any distance shown in the
figures, or any other fixed distance. When applied to the Louisville
Catalog’s FULL METAL BOOT, we agree with Petitioner that the rail
flange retainers are positioned substantially inwardly from the edge of the
shell perimeter because the retainers are noticeably recessed from that edge.
See Pet. 20; Ex. 1004, 2; Ex. 1010 ¶ 118. We note that Petitioner’s declarant
testimony remains unrebutted on this issue, even if we considered Patent
Owner’s argument in its Sur-reply. See PO Sur-reply 24–25 (not citing any
declarant testimony); Tr. 43:15–21 (Patent Owner acknowledging its experts
did not address the meaning of the term). We find the testimony of Mr. Ver
Halen credible on this point. We do not determine whether Plotner also
discloses this limitation.
Based on the foregoing, Petitioner has established that the
combination of the Louisville Catalog and the Werner Brochure (with or
without the addition of Plotner) discloses all of the limitations of claim 10.
6. Dependent Claims 9 and 11
Dependent claims 9 and 11 depend from independent claims 8 and 10,
respectively, and further require a shell having “a base including a slanted
portion.” Ex. 1001, 17:25–26, 17:50–51. Petitioner argues that both the
Louisville Catalog and Plotner discloses a shell base with a slanted portion.
Pet 18, 21, 29–31, 36. As to Plotner, Petitioner argues that it was well
known to employ slanted bases on ladders because the “ladder rails do not
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stand at a perfect vertical during operation” and the slanted base allows the
base or tread to lie flat during use. Pet. 29 (citing Ex. 1010 ¶ 135).
Petitioner asserts that the base can be slanted from right to left or front to
rear, or both, to accommodate angled ladder rails, and that Plotner discloses
both approaches. Id. at 29–30 (citing Ex. 1005, Figs. 2d (depicting left to
right slant to accommodate ladder rails that are wider on bottom than on the
top, such as most stepladders), 2e (depicting front to rear slant); Ex. 1010
¶¶ 136–138). Petitioner also relies on Plotner’s disclosure of specific slant
angles for its shell base. Id. at 30 (citing Ex. 1005, 9:36–60, Figs. 11a, 12a;
Ex. 1010 ¶ 139). Petitioner argues that it would have been obvious to
incorporate the slanted base on embodiments that do not depict a slanted
base. Id. at 31 (citing Ex. 1010 ¶ 140). Patent Owner argues that
Petitioner’s arguments based on the Louisville Catalog lack merit, but does
not address or otherwise dispute Petitioner’s argument and evidence as to
Plotner’s disclosure of a slanted base. See PO Resp. 26–27 (addressing
Louisville Catalog).
We are persuaded by Petitioner’s arguments and evidence, and find
that Plotner discloses a shell base with a slanted portion, for the reasons set
forth by Petitioner. See Pet. 29–31; Ex. 1005, Figs. 2d, 2e, 11a, 12a; Ex.
1010 ¶¶ 135–140. We do not reach whether the Louisville Catalog also
discloses this limitation.
7. Claims 12–16
Independent claims 12 and 14 and dependent claims 13, 15, and 16
overlap in many respects with the claims addressed above. Petitioner asserts
that the combination of the Louisville Catalog, Plotner, and the Werner
Brochure discloses all of the limitations of these claims. See Pet. 37–45, 49–
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52. Patent Owner does not raise any additional arguments with respect to
the limitations in these claims. Instead, Patent Owner argues that the
references fail to disclose the bond limitation (found in all claims) and the
entirely open face limitation (claim 13), which we addressed above.
Independent claims 12 and 14 begin with the same preamble as claims
8 and 10 and the same portion of the following shell limitation: “a shell
formed of at least one material, said shell having a size suitable for engaging
the ladder rail.” Ex. 1001, 18:1–4, 18:24–27. Petitioner argues that both the
Louisville Catalog and Plotner disclose these limitations for the same
reasons discussed above in the context of claim 8. See Pet. 14–15, 21–24,
37, 41–42. Petitioner also argues that the Louisville Catalog discloses “a
tread formed of at least one other material and the bond limitation,” for the
same reasons as addressed above in the context of claim 8. See id. at 38, 43,
49. Patent Owner does not address or dispute Petitioner’s arguments and
evidence in support of Petitioner’s contention that both the Louisville
Catalog and Plotner disclose these limitations, with the exception of Patent
Owner’s arguments as to the bond limitation, which we addressed above.
For the same reasons set forth above, we find that the Louisville Catalog
discloses the preamble, the shell limitation, and the tread; Plotner discloses
the preamble and shell limitation; and the Werner Brochure discloses the
bond limitation.
Claim 12 includes the following limitations that do not appear in the
other claims:
said shell having a base with a slanted portion, said base having
a lower surface, sand slanted portion comprising at least a portion
of said lower surface, said shell further comprising:
a perimeter wall; and
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a cavity defined by said perimeter wall and said lower surface of
said base, said cavity positioned beneath said lower surface of
said base of said shell
. . .
said cavity receiving a portion of said tread therein, a volume of
said cavity being increased by said slanted portion of said base.
Ex. 1001, 18:4–12, 18:17–19. Petitioner argues that Plotner discloses a shell
having a slanted portion for the same reasons Petitioner set forth in the
context of claim 9. Pet. 37 (citing Ex. 1010 ¶¶ 151–153). Petitioner also
argues that Plotner discloses foot 38 having a perimeter wall that extends
downward to define a cavity below lower surface 42 of foot 38. Id. at 37–38
(citing Ex. 1005, Figs. 1, 4; Ex. 1010 ¶ 154). As to the limitation requiring
the cavity to receive a portion of the tread and the slanted portion to increase
the volume of the cavity, Petitioner argues that Plotner discloses the cavity
with and without tread 40 installed, and that the slanted portion increases the
available cavity volume in the same manner as the slanted portion disclosed
in the Specification. Id. at 39–40 (citing Ex. 1001, 10:7–9, Fig. 6; Ex. 1005,
3:29–30, Figs. 1, 4; Ex. 1010 ¶¶ 156–158). Patent Owner does not address
or dispute Petitioner’s arguments and evidence on these points. We are
persuaded by Petitioner’s arguments and evidence, and find that Plotner
discloses the claimed shell having a slanted portion and cavity as required by
claim 12. See Ex. 1005, 3:29–30, Figs. 1, 4; Ex. 1010 ¶¶ 154, 156–158.
Claim 14 includes the following limitations that do not appear in the
other claims:
said shell having a skirt extending downwardly therefrom
. . .
said skirt covering at least another portion of said tread, said skirt
having a lower edge in generally parallel spaced relation with a
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bottom of said tread and positioned above said bottom of said
tread.
Ex. 1001, 18:27–28, 18:33–36. Petitioner argues that Plotner’s foot 38
includes a downwardly extending perimeter wall that defines a skirt and
receives a tread, with the lower edge of the skirt generally parallel to and
spaced from the bottom of the tread. Pet. 42–43 (citing Ex. 1005, Figs. 1, 4,
6a, 8a; Ex. 1010 ¶¶ 161–162, 164). Patent Owner does not address or
dispute Petitioner’s arguments and evidence on these points. We are
persuaded by Petitioner’s arguments and evidence, and find that Plotner
discloses the claimed skirt covering a portion of the tread, with the lower
edges of each in generally parallel and spaced relation to one another as
required by claim 14. See Ex. 1005, Figs. 1, 4, 6a, 8a; Ex. 1010 ¶¶ 161–162,
164.
Claim 13 depends from claim 12 and further requires that the shell
“defines an entirely open face so that a portion of the ladder rail is exposed
through the entirely open face when the ladder rail and said shell are
engaged.” Petitioner argues that both the Louisville Catalog and Plotner
disclose the “entirely open face” limitation.11 Pet. 16, 24–26, 41. Relying

11 Petitioner raises the Louisville Catalog argument in the context of claim 8,
but mentions it again in the context of claim 13 and the challenge based on
the Louisville Catalog, Plotner, and the Werner Brochure broadly refers
back to Petitioner’s earlier contentions in its challenges to claims 8–16. See
Pet. 49; Pet. Reply 19–20. We view Petitioner’s challenge to claim 13 based
on the Louisville Catalog, Plotner, and the Werner Brochure as including
reliance upon the Louisville Catalog (and Plotner) as disclosing the “entirely
open face” limitation in claim 13. Patent Owner fully briefed the issue of
claim construction and whether the Louisville Catalog discloses this
limitation in the context of claim 8, and the same arguments apply to the
slightly broader version of the limitation in claim 13. See PO Resp. 2, 13–
17, 21–24, 30–33; PO Sur-reply 5–10, 12–15, 18–22.
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on its proposed claim construction, Patent Owner argues that both the
Louisville Catalog and Plotner fail to disclose the claimed “entirely open
face.” PO Resp. 21–24, 30–33. As discussed above, we decline to adopt
Patent Owner’s proposed construction of “entirely open face” and find that
the Louisville Catalog and multiple embodiments in Plotner disclose an
entirely open face that exposes a portion of the ladder rail when the ladder
rail and shell are engaged, as required by claim 8. The references disclose
claim 13’s “entirely open face” limitation because that limitation, while very
similar to claim 8, does not require “opposite said first wall and between
said pair of side walls” and is therefore broader than claim 8 in that respect.
Accordingly, we apply the same reasons we found that the Louisville
Catalog and Plotner disclose the entirely open face limitation of claim 8 to
claim 13.
Claim 15 depends from claim 14 and further requires a tread having
“at least one color that is different than at least one color of said shell.”
Petitioner argues that the Louisville Catalog depicts a silver metal shell and
black rubber tread that satisfies the limitations of claim 15. Pet. 44 (citing
Ex. 1004, 2; Ex. 1010 ¶¶ 165, 177). Patent Owner does not address or
dispute Petitioner’s arguments and evidence on these points. We are
persuaded by Petitioner’s arguments and evidence, and find that the
Louisville Catalog discloses the claimed tread having “at least one color that
is different than at least one color of said shell.” See Ex. 1004, 2; Ex. 1010
¶¶ 165, 177.
Claim 16 depends from claim 14 and further requires “a mechanical
fastener engageable with said tread and said shell.” Petitioner argues that
the Louisville Catalog discloses using rivets, which are mechanical
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fasteners, “to bond the tread to the shell of the FULL METAL BOOT.” Pet.
45 (citing Ex. 1001, 2:19–22; Ex. 1010 ¶¶ 166–167, 178). Patent Owner
does not address or dispute Petitioner’s arguments and evidence on these
points. We are persuaded by Petitioner’s arguments and evidence, and find
that the Louisville Catalog discloses the claimed mechanical fastener
engaging the tread and the shell. See Ex. 1004, 2; Ex. 1010 ¶¶ 166–167,
178.
Based on the foregoing, we find that the combination of the Louisville
Catalog, Plotner, and the Werner Brochure discloses all of the limitations of
claims 8–16.
8. Combination
As to the reason to combine the Louisville Catalog and Plotner,
Petitioner argues that one of ordinary skill in the art would naturally have
looked to designs from two of the largest ladder manufacturers when
“looking for features to mitigate wear and tear in a commercial ladder.” Pet.
45–46 (citing Ex. 1010 ¶¶ 168–171). Petitioner also asserts that the general
features, such as ladder rail covers, shells, and treads, “were generally
interchangeable” and combining them as Petitioner proposes “would have
involved routine application of known ladder features” with “predictable
results.” Id. at 46 (citing Ex. 1010 ¶ 170). As to the addition of the Werner
Brochure to the combination, Petitioner argues that it, like Plotner, comes
from one of the largest ladder suppliers and, like the Louisville Catalog and
Plotner, would have been considered by one of ordinary skill in the art for
design features that would mitigate wear and tear. Id. at 52 (citing Ex. 1006;
Ex. 1010 ¶ 186; Ex. 1011 ¶¶ 9–10). Petitioner also argues that it “would
have been a simple substitution of the tread with studs from the Werner
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brochure in place of the rivets of the Louisville Catalogs.” Id. (citing Ex.
1010 ¶ 187). Petitioner relies on several motivations for the addition of the
studs in the Werner Brochure tread, including cost reduction, ease of
assembly, and ease of tread replacement. Id. at 52–53 (citing Ex. 1010
¶ 187).
As to the Louisville Catalog/Plotner combination, Patent Owner
argues that Plotner discloses a ladder with an improved knee brace and “has
no relevance to the ’731 patent.” PO Resp. 28–29 (citing Ex. 1005, 1:13–20,
1:23–40; Ex. 2003 ¶ 31). Patent Owner also asserts that “Plotner is far afield
from the disclosure of the Louisville Catalogs.” PO Resp. 42 (citing Ex.
2003 ¶ 56). Patent Owner asserts that Plotner’s “primary object . . . is to
provide a ladder that has a member connected to both the ladder rail and the
first step in order to support the first step.” Id. (citing Ex. 1005, Abstract;
Ex. 2003 ¶ 56). This “improved knee brace” of Plotner, according to Patent
Owner, distinguishes Plotner’s primary purpose from the Louisville
Catalog’s FULL METAL BOOT, which does “not address providing
support to the first step of the ladder” and instead focused on “durability and
sure footing.” Id. at 42–43 (quoting Ex. 1002, 10) (citing Ex. 1005, 1:41–
48, Figs. 1, 2-2f, 3-3F; Ex. 2003 ¶¶ 56–57). Patent Owner also argues that
combining the references would render Plotner unsuitable for its intended
purpose, a knee brace. Id. at 43–44 (citing Ex. 2003 ¶¶ 57–59; MPEP
2143.01(VI)). Patent Owner also views Petitioner’s stated reasons for the
combination as lacking and driven by hindsight, with a failure to establish a
reasonable expectation of success. Id. at 45–47 (citing Pet. 46–47; Ex. 1010
¶ 133; Ex. 2003 ¶¶ 60–63). As to the addition of the Werner Brochure to the
combination, Patent Owner relies on the same arguments made against the
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combination of the Louisville Catalog and Plotner. See id. at 51–52 (citing
Ex. 2003 ¶¶ 54–63, 69).
In its Reply, Petitioner argues that Patent Owner concedes that the
three references teach the majority of claim limitations in an overlapping
manner, and one of ordinary skill in the art “would have known that Plotner
was relevant to ladder rail covers and that its teachings could be combined
with similar and complementary features from the Louisville Catalogs.” Pet.
Reply 23 (citing Pet. 45–48; Ex. 1010 ¶¶ 33, 95, 168–171). Petitioner also
argues that Patent Owner’s argument that Plotner’s knee brace renders it
incompatible with the Louisville Catalog’s FULL METAL BOOT is belied
by the fact that Plotner discloses rail guards “remarkably similar to the
FULL METAL BOOT, and like Plotner the Louisville Catalogs show a knee
brace to support the bottom step.” Id. at 24 (citing Paper 12, 43–44; Ex.
2003 ¶¶ 58–59). Petitioner further contends that even if “the FULL METAL
BOOT features were unsuitable for use with Plotner’s knee brace” other
features, such as those in the challenged claims, could have been combined.
Id.
In its Sur-reply, Patent Owner argues that the overlapping features of
the references are not enough to provide a reason for the proposed
combination. PO Sur-reply 25 (citing Ex. 2003 ¶¶ 56–57). Patent Owner
also stresses that the FULL METAL BOOT was not located anywhere near
the knee brace that was the focus of Plotner, and that one “looking to modify
the knee brace of Plotner would not have looked to the Louisville Catalogs.”
Id. at 26–27 (citing Ex. 1005, 1:17–20; Ex. 2003 ¶¶ 56–57, 62). Patent
Owner further argues that the proposed modifications “would require a
substantial reconstruction” of Plotner’s supporting members, which “would
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undermine Plotner’s stated purpose of providing support to a first step of a
ladder.” Id. (citing Ex. 2003 ¶ 58).
We disagree with Patent Owner’s assertion that Plotner “has no
relevance to the ’731 patent” merely because it discloses a brace for
strengthening the horizontal first step of a ladder. PO Resp. 29. We are
persuaded by Petitioner’s argument, supported by credible testimony from
Mr. Ver Halen, that one of ordinary skill in the art would have considered
Plotner together with the other references when considering features for
shells and treads at the bottom of the ladder rail. Pet. 45–46; Ex. 1010
¶¶ 168–171. Patent Owner focuses heavily on the knee brace Plotner
discloses, but virtually ignores Plotner’s descriptions of various shell
structures at the bottom of the ladder rails that serve the same purposes as
the Louisville Catalog’s FULL METAL BOOT. See Ex. 1010 ¶ 169; Ex.
1005, Figs. 2, 6a, 8a. Plotner devotes considerable content to descriptions of
aspects of the “second portion 32” of its member 100 that attaches to the
bottom of the ladder rail in a number of embodiments—it does not focus
exclusively on the “first portion 30” that attaches to the first step as Patent
Owner suggests. See, e.g., Ex. 1005, 2:65–3:33, 5:19–26, 6:30–53, 8:58–65.
The failure to acknowledge and address these overlapping approaches to
similar problems, as if Plotner only cared about supporting the first step of
the ladder, undermines the credibility of Patent Owner’s arguments,
including its argument that features of Plotner’s shell and tread on the end of
its ladder rail would not have been suitable for combination with features
from the Louisville Catalog’s FULL METAL BOOT shell and tread.
We are persuaded by Mr. Ver Halen’s testimony that the general
features, such as ladder rail covers, shells, and treads, “were generally
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interchangeable within the knowledge and abilities of those of ordinary skill
in the art at the time.” Ex. 1010 ¶ 170. Patent Owner’s declarant Mr. Quan
states that the combination would require modifications that may lessen the
capabilities of Plotner’s knee brace, rendering it unsuitable for its intended
purposes, but such broad statements do not imply that Plotner would be
rendered unsuitable. See Ex. 2003 ¶ 58. Instead, they suggest, at most, that
one of skill in the art would need to weigh any potential advantages when
incorporating aspects of the Louisville Catalog FULL METAL BOOT,
which could potentially lower the ability to support the first step of the
ladder. See id.; see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit . . . should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”). On
the whole, we credit the testimony of Mr. Ver Halen because it is more
consistent with Plotner’s disclosure, and we find that Petitioner has
established by a preponderance of the evidence that one of ordinary skill in
the art would have had a reason to combine the Louisville Catalog, Plotner,
and the Werner Brochure.
9. Conclusion
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361
(Fed. Cir. 2017) (citing In re Cyclobenzaprine Hydrochloride Extended-
Release Capsule Patent Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)).
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Above, based on full record before us, we provide our factual findings
regarding (1) the level of ordinary skill in the art, (2) the scope and content
of the prior art, (3) any differences between the claimed subject matter and
the prior art, and (4) objective evidence of nonobviousness.
In particular, we find that (1) Patent Owner’s proposed level of
ordinary skill in the art is consistent with the art of record; (2) the asserted
references teach all the limitations of claims 8–16; (3) one of ordinary skill
in the art would have had a reason to combine the identified components in
the Louisville Catalog, Plotner, and the Werner Brochure, with a reasonable
expectation of success; and (4) there is no persuasive objective evidence of
nonobviousness in the record. Weighing these underlying factual
determinations, a preponderance of the evidence persuades us that claims 8–
16 of the ’731 patent are unpatentable over Louisville Catalog, Plotner, and
the Werner Brochure.
E. Obviousness of Claims 19 and 20 Based on Plotner, the
Louisville Catalog, the Werner Brochure, and the Modern
Plastics Handbook
Petitioner challenges claims 19 and 20 under 35 U.S.C. § 103(a) based
on the Louisville Catalog, Plotner, the Werner Brochure, and the Modern
Plastics Handbook. Pet. 14, 54–65. Claims 19 and 20 both depend from
independent claim 14. Ex. 1001, 18:46–49. Claim 19 requires the “at least
one other material” of the shell to comprise a “copolymer,” while claim 20
requires the “at least one other material” of the tread to comprise a
“thermoplastic elastomer.” Id.
Petitioner argues that Plotner and the Werner Brochure disclose a
shell made of plastic, and one of ordinary skill in the art considering various
plastics at the time of invention would have found it obvious to use a
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copolymer. Pet. 55–59. Petitioner supports its argument with reference to
the Modern Plastics Handbook as well as the Ver Halen Declaration. See id.
(citing Ex. 1007, 1.40, 1.60–1.63, 8.13–8.16; Ex. 1010 ¶¶ 101, 191–202).
As to claim 20, Petitioner argues that the Louisville Catalog discloses a
“rubber” material for its tread, the Werner Brochure teaches an injection
molded tread with integrated studs, and another reference, a Werner
Catalog,12 discloses the use of “polyvinyl feet,” which are thermoplastic
polymers. Id. at 60–61. Petitioner also supports its argument with
references to the Modern Plastics Handbook and the Ver Halen Declaration.
See id. at 60–63 (citing Ex. 1007, 3.1–3.4, 3.8–3.14, 3.26, 8.17; Ex. 1010
¶¶ 203–213). Petitioner further contends that it would have been obvious to
combine the references for the reasons addressed above with respect to the
previous challenge, and that one of ordinary skill in the art would have
further considered a plastics reference book such as the Modern Plastics
Handbook for guidance on useful materials for the application in question.
Pet. 63–65 (citing Ex. 1010 ¶¶ 214–216).
Patent Owner relies on the same arguments made above in the context
of the previous challenges, and the dependency of claims 19 and 20 from
independent claim 14. PO Resp. 52–53. Patent Owner does not raise any
additional arguments specific to claims 19 and 20 or the use of the Modern
Plastics Handbook. Id. We are persuaded by Petitioner’s arguments and
evidence, and find that the combination of the Louisville Catalog, Plotner,
the Werner Brochure, and the Modern Plastics Handbook disclose or render

12 Werner Climbing Products, copyright 1996 (Ex. 1009) (“Werner
Catalog”). Petitioner relies on the Werner Catalog as reaffirming its
argument, rather than relying on the Werner Catalog as another reference in
the proposed combination. See Pet. 60–61.
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Patent 7,000,731 B2

53
obvious all of the limitations of claims 19 and 20, and that one of ordinary
skill in the art would have been motivated to combine the references in the
manner proposed by Petitioner. See Pet. 55–65; Ex. 1007, 1.40, 1.60–1.63,
3.1–3.4, 3.8–3.14, 3.26, 8.13–8.17; Ex. 1010 ¶¶ 101, 191–216.
In summary, we find that (1) Patent Owner’s proposed level of
ordinary skill in the art is consistent with the art of record; (2) the asserted
references teach all the limitations of claims 19 and 20; (3) one of ordinary
skill in the art would have had a reason to combine the identified
components in the Louisville Catalog, Plotner, the Werner Brochure, and the
Modern Plastics Handbook with a reasonable expectation of success; and
(4) there is no persuasive objective evidence of nonobviousness in the
record. Weighing these underlying factual determinations, a preponderance
of the evidence persuades us that claims 19 and 20 are unpatentable as
obvious over the Louisville Catalog, Plotner, the Werner Brochure, and the
Modern Plastics Handbook.
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Patent 7,000,731 B2

54
CONCLUSION13
In summary:

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35 U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
8–11 102(a) Louisville Catalog 8–11
8–11 102(b) Louisville Catalog 8–11
8–16 103(a) Plotner, Louisville
Catalog
8–16
8–16 103(a) Plotner, Louisville
Catalog, Werner
Brochure
8–16
19, 20 103(a) Plotner, Louisville
Catalog, Werner
Brochure, Modern
Plastics Handbook
19, 20
Overall
Outcome
8–16, 19, 20
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Patent 7,000,731 B2

55
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 8–16, 19, and 20 of U.S. Patent No. 7,000,731
B2 have been shown, by a preponderance of the evidence, to be
unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER:

Charles McMahon
Brian Jones
McDERMOTT WILL & EMERY
cmcmahon@mwe.com
bajones@mwe.com

PATENT OWNER:

Terry L. Wright
STITES & HARBISON, PLLC
twright@stites.com